Dillard’s, Inc., Dillard’s International, Inc. v. Chen Bao Shui
Case No. D2007-0520
1. The Parties
The Complainant is Dillard’s, Inc., of Little Rock, Arkansas, United States of America, and Dillard’s International, Inc., of Las Vegas, Nevada, United States of America, represented by Jacobson Holman PLLC, United States of America.
The Respondent is Chen Bao Shui, Shanghai, Republic of China.
2. The Domain Name and Registrar
The disputed domain name <dillardsoutlet.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2007. On April 5, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 10, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2007.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2007.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on May 18, 2007. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.
4. Factual Background
Dillard’s is a prominent retail chain in the United States of America with nearly 300 retail stores in 29 states, generating almost $8 billion in annual revenue. It has operated under the DILLARD’S service mark and trade name since 1976. Dillard’s owns various federal trademark and service mark registrations in the United States of America. The Complaint refers to eight such marks. All are valid and subsisting. Dillard’s has offered and sold products and services under various marks that include the name “Dillard’s”, such as DILLARD’S, DILLARD’S TRAVEL, etc. Since at least April of 1995, Dillard’s has owned the domain name <dillards.com>.
5. Parties’ Contentions
A. Complainant
On or about November 19, 2005, the Respondent registered <dillardsoutlet.com>, the Complainant contends, likely with full knowledge of its trade name and mark and the <dillards.com> domain name. The contested domain name links to a single-page website on which a commercial web directory displays links to the Complainant’s website and to those of other unrelated third parties, some of which compete with Dillard’s and or its business. The site resolves to websites where products sold by the Complainant’s competitors may be purchased. There are also links to products or services that are wholly unrelated to the Complainant. For example, when a visitor clicks on a product sold by Dillard’s such as shoes, the page resolves to a site offering pornographic material for sale. In addition, the contested domain name site employs “pop-ups” to advertise the types of products sold by the Complainant, and the user is directed to a “click-through” page.
The Complainant did not authorize the use, registration and display of its mark, nor was the Respondent licensed to use it. There is no relationship between the parties that would entitle the Respondent to use the mark.
The domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights, Policy paragraph 4(a)(i)
The Complainant refers to the various U.S. registrations of its mark. The contested domain name is legally identical to the DILLARD’S name and mark. The only difference is the addition of the word “outlet” to that mark. It is well established that the addition of a generic or descriptive term does not form a domain name that is distinct from the mark to which it is attached. Accordingly, the addition of the generic word “outlet” to the DILLARD’S mark makes the contested domain name confusingly similar to the Complainant’s mark and Policy paragraph 4(a)(i) is satisfied.
The Respondent has no rights or legitimate interests in respect of the domain name, Policy paragraph 4(a)(ii)
The Complainant asserts that the Respondent has not demonstrated any rights or legitimate interest in adopting and using the contested domain name as a trademark, service mark or domain name and it could not do so without infringing on the Complainant’s name and mark.
The Respondent was not authorized in any way to use the name. It is not an agent, licensee, franchisee of or in any way related to Dillard’s.
The only use of the contested domain name has been to divert traffic away to third party websites, presumably for a profit. This is not a bona fide use or legitimate non-commercial use, as contemplated by the Policy. Moreover, the Respondent has not been commonly known by the domain name.
Accordingly, the Respondent cannot demonstrate any rights or legitimate interest in the disputed domain name, and paragraph 4(a)(ii) of the Policy is satisfied.
The domain name was registered and is being used in bad faith, Policy paragraph 4(a)(iii)
In the Complainant’s view, the Respondent almost certainly had full knowledge of Dillard’s and its DILLARD’S name and marks at the time that it registered the domain name. The Complainant’s mark is well-known and the Complainant has stores throughout the United States. Moreover, through its well maintained website, Dillard’s is known internationally. It is contended further that the Respondent was on constructive knowledge of Dillard’s incontestable federal registrations.
In addition, further evidence of bad faith is provided by the intention of seeking to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark owner’s mark as to source sponsorship, affiliation, or endorsement of the Respondent’s website. This Respondent does precisely that: it attracts users to its site by creating a likelihood of, and actual, confusion with the Dillard’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Finally, the links to sites offering the sale of pornographic materials demonstrates further bad faith use of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the present case the Panel is of the view that the record contains more than sufficient evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has made out this requirement. The combination of the Complainant’s distinctive DILLARD’S mark with the generic word “outlet” in and of itself is sufficient to satisfy Policy, paragraph 4 (a)(i). The domain name is confusingly similar to the Complainant’s DILLARD’S mark and a would-be consumer could reasonably be expected to believe that the domain name belonged to the Complainant.
B. Rights or Legitimate Interests
The evidence is that the Respondent has been given no rights of any kind, expressly or impliedly, in the DILLARD’S mark. The Complainant has asserted this in the Complaint and the Respondent has not attempted to contest this. Given that Complainant has met its burden and in the absence of contrary evidence from the Respondent or otherwise, the Complainant has satisfied Policy, paragraph 4 (a)(ii).
C. Registered and Used in Bad Faith
The Panel also has no difficulty concluding that the domain name has been registered and is being used in bad faith. A review of the evidence filed in respect to the operation of the Respondent’s website reveals that the website lists several third-party websites related to goods produced and sold by the Complainant. The site is a “link farm” with the domain name resolving both to other merchants who compete with the Complainant and offer its goods in competition with it, and to suppliers of pornographic materials who do not compete with Dillard’s. The Panel finds that the Respondent is employing the site in bad faith to generate “click-through” fees so as to profit from the Complainant’s mark. Accordingly, the Complainant has satisfied the Policy, paragraph 4(a)(ii).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <dillardsoutlet.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Sole Panelist
Dated: May 31 2007
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